There is a lot more to branding than a product simply being recognisable to others, as Tahir Basheer, an industry member specialising in fashion and media law for leading London-based law firm, Sheridans, explains.
Names or symbols that distinguish the clothes of one company from another are generally referred to as a company’s brand. A strong brand is a fundamental part of a fashion company’s identity and generally one of its most prized assets.
Top brands such as Versace, Polo Ralph Lauren, Saint Laurent, Mulberry, Dolce & Gabbana or Moschino have each become synonymous with a particular style, message and reputation.
Commercialisation of a brand can also create a crucial extra revenue stream via the sale, licensing or franchising of a brand. Licensing is particularly commonplace in the fashion industry. Brands can even act as security on the basis of which a bank or lender will lend money.
As a result of the value attached to brands, most companies in the industry will have elements of their brand registered as trademarks. By registering a trademark you will have exclusive rights to use the trademark (in the territory in which it is registered) for the goods and services for which it is registered. That registered trademark will be on a public register, putting third parties on notice as to who owns the trademark.
Today’s tips provide basic trademark-related pointers for fashion professionals who want to register their brand as a trademark.
What is a trademark?
Trademark law was established to give businesses a way to distinguish themselves from one another. A trademark is, therefore, a designation of origin – a design, symbol, word or phrase that identifies the source of your products and distinguishes them from the products of other companies.
What can be registered?
A trademark can be a name, symbol, logo, numerals, sounds, or even smells. However, it must be capable of graphic representation.
Examples of well-known fashion trademarks are the Burberry check, the Louis Vuitton print, the Gucci double ‘G’ and the Chanel double ‘C.’
What cannot be registered?
A trademark cannot be registered if:
- It describes your goods or services or any characteristics of them, in a vague or general way. For example, the phrase “fantastic shoes” would not be registrable.
- It contains a word that has become commonplace in everyday speech. For example, words like “jumpsuit,” “Wellington” and “Mackintosh” are not distinctive enough.
- It is a three-dimensional shape (design rights apply to these), if the shape is typical of the type of goods you are interested in creating, has a function or adds value to the goods (for example a button loop).
- It is a protected emblem (for example the emblems associated with each state in the USA).
- It is offensive, illegal or deceptive.
Where can I register a trademark?
A registered trademark is a territorial right. It will only offer protection in the territory for which it is registered. In the UK, a business should consider the following initial options:
- A UK national trademark.
- A European trademark.
- An international registration which designates the UK (this will provide a bundle of national registrations in the selected countries but can be filed with a single application).
What should I register for?
You will only be protected for those goods and/or services listed in the application. You should, therefore, think carefully about what you would like covered.
Related reading: 10 Tips on How to Register your Trademark
There are official classes that you can choose from. I always advise clients to focus on core products or services, and perhaps other products or services that the brand is likely to extend into within the next two years or so.
What’s the cost of registering a trademark?
The cost will depend on the number of territories and the classes that you choose. The more you choose the more expensive it will be, so you will need to budget properly.
How long will the registered trademark last?
A trademark will last for ten years, but it can be renewed. So, in theory, as long as you renew every ten years, you can keep the registered trademark forever.
If you have any questions about this article or general feedback then please do not hesitate to let us know in the comments below.